Trade Mark News & Information

Trademark Registration – ATMO Decisions – July 2018

Chris Di Lorenzo & Dora Di Lorenzo v Denversian Pty Ltd [2018] ATMO 105 (2 July 2018)

Unsuccessful opposition by Di Lorenzo to trademark registration of BLACK SHEEP filed on 10 September 2015 for restaurant, café and bistro services in class 43. This trademark application was accepted with a s44(4) endorsement based on prior continuous use and limited to the State of Queensland.

Trademark registration Black Sheep Logo

The opponents have, since September 2011, operated a café business in New South Wales as a partnership under the name Black Sheep. They also have a trademark registration for the trade mark shown below dating from 16 March 2015 and covering coffee products in class 30 and coffee house services in class 43.

The applicant has, since August 2013, operated a bistro restaurant in Oxenford, Queensland. It failed in its opposition to registration of the opponents’ trade mark in which it alleged a likelihood of confusion.

The delegate found the applied for mark was deceptively similar to the opponent’s prior registered mark and covered similar services, so there was a valid ground of objection under s44. However, the delegate applied the s44(3)(a) honest concurrent use provision with the geographical limitation to the State of Queensland.

The opponents also relied on s58A, but it is only applicable where s44(4) is used to accept an application. Since the delegate applied s44(3)(a), it was not open to the opponents to press the s58A ground.

Under the s58 ownership ground, the opponents relied on their use of Black Sheep since September 2011, but their evidence did not corroborate this bare assertion of use and this ground of opposition also failed.

The opponents also relied on the s42(b) contrary to law ground based on the applicant’s conduct being misleading or deceptive under the Australian Consumer Law, but the evidence did not support the higher onus to establish this ground.

 

IP Solutions International Pty Ltd [2018] ATMO 106 (2 July 2018)

The applicant was unable to overcome an examination objection based on the applied for TokenSecure trade mark filed on 9 March 2017 for electronic funds transfer and financial transaction services in class 36 being non-distinctive.  The delegate agreed with the examiner that the ordinary signification of the applied for mark is a financial service that employs a secure token and/or a security token and other traders have  a legitimate desire to use these words for the sake of this ordinary signification.

 

M Malmsten AB v Competitor Swim Products Inc [2018] ATMO 108 (5 July 2018)

Successful opposition by Malmsten to trademark registration of COMPETITOR filed on 17 February 2016 for swimming equipment in class 28.

The s58 ownership ground of opposition was upheld.

The opponent was previously licensed by the applicant’s predecessors in title to use the COMPETITOR trade mark and subsequently, in 2014, purchased rights to this brand in Europe. At that time, the applicant and its predecessors in title had not accrued nay rights to the COMPETITOR trade mark in Australian. Based on the evidence, the delegate was satisfied there was Australian use of the COMPETITOR trade mark for certain swimming equipment by the Opponent in August – September 2014 which was not use as an authorised user of the applicant, but was use by the opponent in its own right.  Consequently, the opponent was the first user and owner of this mark in Australia in respect of those goods which were the same kind of thing as the swimming equipment for which registration was being sought and it was not appropriate to consider any amendment to the application which might differentiate the respective goods.

 

Pernod Ricard Winemakers Pty Ltd v Cracka IP Pty Ltd [2018] ATMO 110 (11 July 2018)

Successful opposition by Pernod Ricard to trademark registration of RICHMOND PARK filed on 18 February 2016 for wine in class 33.

This was a decision on the written record. The opponent filed evidence and written submissions. The applicant did not file any evidence or submissions.

The opponent prevailed under the s44 ground by relying on its prior registration for RICHMOND GROVE.

The delegate noted that the respective marks are conceptually similar, being the word ‘Richmond’ and a geographical feature that evokes a natural landscape with the presence of trees. Visually and aurally, they share the same first element, but are distinguished by their dissimilar second words. However, allowing for imperfect recollection, there is a real likelihood that some people will wonder or be left in doubt about whether Richmond Park wine comes from the same source as Richmond Grove wine. Given that the terms ‘grove’ and ‘park’ are geographical features referring to natural landscapes with trees, there is a likelihood that a person of imperfect recollection is likely to focus on the ‘Richmond’ element of the respective marks.

 

Perfect Fit Industries, Inc v Domingo So Pensaloza and Rong Ping Tang [2018] ATMO 111 (11 July 2018)

Unsuccessful opposition by Perfect Fit to trademark registration of PFB (Stylised) filed on 16 June 2016 for bearing, gears and belts in class 7.

The applicant did not file any evidence or participate in the hearing.

Under the s44 ground, the opponent relied on its prior registrations for PFI BEARING & Device and PFI (Stylised) for bearings, but the delegate did not consider the applied for mark was deceptively similar to either of these registered marks.

The opponent also relied on the s60 reputation and s62A bad faith grounds, but its evidence fell well short of supporting these grounds.

 

Precedent Productions Pty Ltd v Interested in Business Pty Ltd [2018] ATMO 112 (16 July 2018)

Unsuccessful oppositions by Precedent Productions to trademark registration of the composite marks shown below filed on 31 January 2016 for various services in classes 35 and 41.

Trademark registration The local Business Awards Logo       Trademark Registration The Australian local Business Awards

Under the s41 ground, the delegate confirmed the words “local business awards” are devoid of any inherent adaptation to distinguish in the context of services relating to business awards. However, the applied for marks are composite marks and the additional matter provided the requisite degree of distinctiveness to qualify for registration.

Under the s60 ground, the opponent relied on its use, since 2008, of the word mark LOCAL BUSINESS AWARDS. However, the delegate commented that any discussion of whatever reputation these words might have would serve no useful purpose because these words are devoid of any distinctiveness and the risk of confusion must be accepted. Otherwise, it would be tantamount to allowing the opponent a monopoly in these words.

The opponent also relied on the s42(b) contrary to law ground based on the applicant’s conduct being misleading or deceptive under the Australian Consumer Law, but that ground also failed for similar reasons to that for the s60 ground.

 

The Kindred Co Pty Ltd v ZW Family Pty Ltd as Trustee for ZW Family Trust [2018] ATMO 113 (17 July 2018)

Unsuccessful opposition by Kindred to trademark registration of EBBY AND I as shown below filed on 25 January 2016 for women’s clothing in class 25.

Trademark Registration Ebby And I Logo

The applicant has used this mark since 25 September 2015.

Under the s44 ground, the opponent relied on its prior registration for EB & IVE covering apparel and clothing in class 25, but the delegate did not consider the applied for mark to be substantially identical with or deceptively similar to this registered mark.

The s58 ownership ground also failed because none of the trade marks containing or consisting of EB & IVE used by the opponent since February 2010 were substantially identical with the applied for mark.

The s60 ground also failed because the delegate was not satisfied the opponent’s EB & IVE trade mark had acquired any significant Australian reputation and, given the differences in the respective marks, confusion was unlikely.

The opponent also relied on the s42(b) contrary to law ground based on the applicant’s conduct being misleading or deceptive under the Australian Consumer Law, but that ground also failed for similar reasons to that for the s60 ground.

The s62A bad faith ground of opposition also failed.

 

Elmwood Design Limited v Dig & Fish Pty Ltd [2018] ATMO 114 (18 July 2018)

Unsuccessful opposition by Elmwood to trademark registration of DIG&FISH filed on 26 February 2013 for various business, advertising and marketing related services in class 35 and website design and graphic design services in class 42.

The applicant used the DIG brand from 2005 and re-branded to DIG & FISH following the merger between Dig Marketing Group Pty Ltd with 2Fish Management Pty Ltd in 2013.

The opponent relied on its prior registration for the trademark FISH and use of this mark for brand design consultancy services since October 2010.

The s60 reputation ground failed because much of the evidence disclosed use of FISH with the ELMWOOD brand and the delegate was not satisfied any of the opponent’s trade marks containing or consisting of FISH had acquired an Australian reputation as at 26 February 2013.

The s42(b) contrary to law ground based on the applicant’s conduct being misleading or deceptive under the Australian Consumer Law also failed.

The s44 ground based on the opponent’s prior trademark registration for FISH failed. The delegate considered the overall impressions left by the respective trade marks, while having some similarities, are sufficiently visually and aurally different that there is no real and tangible danger of confusion.

The s59 lack of intention to use ground was added by the opponent, but also failed. The assertion based on lack of use of the applied for mark and use of an alternative version were not enough to shift the onus back onto the applicant and, in any event, the evidence disclosed use of the applicant’s mark shortly after the relevant filing date which is persuasive that the applicant had an intention to use this mark at the filing date.

The opponent also relied on the s62A bad faith ground which was largely based on the applicant ought reasonably have been aware of the opponent at the relevant filing date, but that  was not enough to show bad faith and, in any event, the applicant’s explanation as to its adoption of the applied for mark was entirely reasonable and natural following the merger in 2013.

 

Chris Staats v Click Loans Pty Ltd [2018] ATMO 116 (19 July 2018)

Unsuccessful opposition by Staats to trademark registration of Click Loans (Stylised) filed on 6 January 2016 for various financial services in class 36. The trademark application was accepted with endorsements indicating the other circumstances and prior continuous use provisions were applied.

The opponent alleged various grounds of opposition, but did not file any evidence. Consequently, it was only necessary to consider the s44 ground based on the prior marks identified in the Statement of Grounds and Particulars, specifically two registrations for LoanClick owned by Mortgage Line Australia Pty Ltd which was a company connected with the opponent.

The delegate considered the applied for mark was deceptively similar to the LoanClick registered marks, but applied the s44(3)(b) other circumstances provision to overcome this. In particular, the applicant owned an earlier registration for the word mark CLICK dating from 21 February 2996 which covered insurance and financial affairs generally. The applicant had acquired this prior registration during examination of its Click Loans trademark application. The applicant also had a registration for the word mark CLICK LOANS which was also filed on 6 January 2016 and not opposed. The delegate was not prepared to apply s44(3)(b) based on the prior CLICK registration because there was no evidence as to continuous use of this mark. However, s44(3)(b) was applied based on the CLICK LOANS word mark registration because it would be futile to deny registration of the slightly stylised variant shown in the applied for mark.

 

Tencent Holdings Limited v WePay Inc [2018] ATMO 117 (24 July 2018)

Unsuccessful oppositions by Tencent to trademark registration of word and logo versions of WEPAY filed on 19 June 2015 and 17 February 2016 for a broad range of payment processing related services in classes 35, 36, 38, 42 and 45.

The opponent’s Statement of Grounds and Particulars raised grounds of opposition under s60 reputation and s 42(b) contrary to law based on the applicant’s conduct being misleading or deceptive and contrary to the Australian Consumer Law

Neither party filed evidence or written submissions.

Since the opponent carries the onus and did not file any evidence, both grounds of opposition were immediately dismissed.

 

Southcorp Brands Pty Limited v Eastern Tomorrow Jinjiang Import & Export Co Ltd [2018] ATMO 118 (25 July 2018)

Successful opposition by Southcorp to trademark registration of EASON’S RETREAT & Device, RUSH RICH ESTATE Master’s Legend & Device and RUSH RICH & Device each filed on 31 August 2016 for various alcoholic beverages in class 33.

The applicant did not file any evidence or participate in the hearing.

These cases are linked to the earlier March 2018 decision reported here . The opponent again prevailed under the s62A bad faith ground based on the applicant’s attempts to misappropriate the trade marks, brands and imagery of Treasury Wine Estate.

 

Loco Liquor PLv 4 Brothers Brewing PL [2018] ATMO 119 (31 July 2018)

Unsuccessful opposition by Loco Liquor to trademark registration of 4 BROTHERS BREWING Logo shown below filed on 1 December 2015 for various beer products in class 32

Trademark Registration 4 Brothers Brewing Logo

Under the s44 ground, the opponent relied on its prior registrations for 2 BROTHERS, TWO BROTHERS and 2 BROTHERS BREWERY.

The delegate regarded the applicant’s goods to be similar and closely related to the goods and services covered by the opponent’s registrations, but reached the conclusion the respective marks were not deceptively similar. The delegate noted the coexistence of trade mark registrations for TWO BROTHERS, 3 BROTHERS, THREE BROTHERS, FIVE BROTHERS and 12 BROTHERS.

The opponent also relied on the s42(b) contrary to law ground and contended the applicant’s conduct would be misleading or deceptive and contrary to the Australian Consumer Law as well as passing off at common law. However, given the delegate’s finding that there was unlikely to be a risk of confusion in the context of s44, the opponent could not satisfy the higher evidentiary onus to establish this ground of opposition.